T 0638/21 - A non-novel second non-medical use

Key points

•  Claim 1 of the patent is directed to: "1. Use of N-n-butylpyrrolidone as a non­-reprotoxic solvent."
• The prior art discloses the use of N-n-butylpyrrolidone (NBP) as a solvent but does not mention non­-reprotoxicity.
• "The board notes that D1 (page 1, lines 1-7) discloses compositions intended for topic application, with the solvent used (for example NBP) facilitating the absorption by the skin of ingredients having cosmetic or medical properties. In the board's view, such solvated compositions were implicitly held non-toxic at the filing date of D1, since they were supposed to be absorbed by the skin." 
• "Since NBP was moreover not classified as being reprotoxic at the publication date of D1, the skilled reader would at this date have understood from D1 that the solvent used was also inherently non-reprotoxic and could be commercialised without any warning label and freely used by any possible group of users. " 
• "The present case thus differs from a new therapeutic application wherein an unknown therapeutic effect can be discovered by clinical trials. This conclusion in line with established case law, for example T 1523/07, reasons 2.4, according to which "implicit disclosure means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content".
• "differently from the uses considered in decisions G 2/88 and G 6/88 that clearly concerned a technical effect (namely friction reduction and fungi control, respectively) different from those already known for the substance in question, and wherein the known chemical substance was purposively applied to achieve the new technical effect, the use of NBP as a non-reprotoxic solvent, even if considered to be a purposive application, underlies that already disclosed in D1."
• "This conclusion is supported by case law, for example that in T 892/94 (OJ 2000, 1, notes II) which concluded that "... a newly discovered technical effect does not confer novelty on a claim directed to the use of a known substance for a known non-medical purpose if the newly discovered technical effect already underlies the known use of the known substance."
• "the board concludes that the label of the use of NBP as "non-reprotoxic" solvent is merely an explanation of the non-toxicity already inherently known from D1 by means of its use for absorption by human skin, which use cannot distinguish the claimed use from the known one."
• The patent is revoked.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1598/20 - New objections in the decision

Key points

• The applicant appeals against the refusal. 
• On the admissibility of the amended claims: "As explained by the appellant in the statement of grounds of appeal, the amendments made in the new main request filed on appeal clearly address the objection of added subject-matter raised by the examining division, for the first time, in the decision under appeal." emphasis added. 
• The amendments overcome the objections under Art. 123(2).
• The Board " points out that, in such circumstances, the examining division should have considered the appeal admissible and well founded and, consequently, should have rectified the decision under Article 109(1) EPC. "
• The case is remitted.
• The appeal fee is not reimbursed (or more precisely: there is no order to do so in the decision).
• If the ED raises new objections  "for the first time in the decision under appeal" this is a violation of the right to be heard, and the appeal fee is (normally) reimbursed under Rule 103(1)(a) EPC ex officio.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0543/20 - (II) Art. 12(4)(s.4) RPBA bites

Key points

• Auxiliary request 2 (renumbered from AR-5) is a carry-over auxiliary request.

Admissibly raised before OD

• The first question is whether the unless-clause of Art. 12(4) RPBA applies, particularly whether it was admissibly filed before the OD.
• The Board, in translation: "Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second headnote in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Board."
• "The respondent's [proprietor's] opinion cannot be accepted in this respect, according to which auxiliary request [5] was a response to an objection raised by the [opponent] in the written statement filed [before the OD] under Rule 116 EPC [...]. It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it [by an obvious feature] (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition)."
• "Auxiliary request 2, which [specifies a difference with ] document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step ."
• It may be wise for proprietors to take the first opportunity to file a reply to a Notice of opposition seriously.

Requirement to indicate the basis

• The proprietor had, as respondent, not indicated the basis for the amendment in its appeal reply brief. Therefore, Art. 12(4)(s.4) is not met, and the request is not admissible on that ground. The Board considers that the requirement of indicating the basis of claim amendments is, in translation, "a further essential prerequisite".
• " Weitere essentielle Voraussetzung für die Berücksichtigung nach Artikel 12(4) VOBK ist, im Falle einer Änderung der Patentanmeldung oder des Patents, die Angabe der Grundlage der Änderung in der ursprünglich eingereichten Fassung der Anmeldung, sowie die Anführung der Gründe, warum mit der Änderung die erhobenen Einwände ausgeräumt werden."
• Some further requests are not admitted either, and the patent is revoked. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0943/22 - Withdrawal opposition by respondent

Key points

• The OD maintains the patent in an amended form, finding that the claims as granted lack basis in the application as filed. Both parties appeal. The opponent withdraws the opposition in the course of the appeal.
• The Board finds that the claims as granted do have basis in the application as filed.
• Under Article 111(1) EPC, " The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution".
• Under Rule 84(2) EPC, the EPO may continue the opposition of its own motion if the opposition is withdrawn.
• In T 0228/16, the board remitted the case after the withdrawal of the opposition, in an appeal of the proprietor. The proprietor had successfully argued that the (amended) claims were sufficiently disclosed, thereby overcoming the grounds of the impugned decision.
• The OD after the remittal considered inventive step of the operative set of claims in an interlocutory decision (link) that the patent could be maintained in amended form. 
• The present Board: "While Rule 84(2) EPC (Rule 60(2) EPC 1973) provides that, after withdrawal of an opposition, the European Patent Office may continue the opposition proceedings of its own motion, this option to continue the proceedings after withdrawal of the opposition does not apply in appeal proceedings (G 8/91, OJ EPO 1993, 346, point 7 of the Reasons [*]). The Enlarged Board of Appeal concluded in G 8/93 (OJ EPO 1994, 887) that the withdrawal of the opposition by an opponent who is the sole appellant immediately and automatically terminates the appeal proceedings, even if in the board's view the requirements under the EPC for maintaining the patent are not satisfied. In this case, the opponent was not the sole appellant, and therefore the appeal proceedings had to be continued in view of the still-pending appeal by the proprietor; however, after allowing the proprietor's appeal, taking into account the above-quoted principles established by the Enlarged Board of Appeal, the board may not assess the remaining grounds of opposition raised by the former opponents/interveners. The board's finding that the ground for opposition under Article 100(c) EPC does not preclude the maintenance of the patent as granted implies that the patent is to be maintained as granted."
• *: G 8/91 is really only about a withdrawal of an appeal, and para. 7 of it should be understood in that context, as is clear from the immediately preceding paragraph 6, which speaks of "the withdrawal of the appeal".
• Finally, the order of the decision is that the patent is maintained as granted. As a comment, I understand that under Rule 84(2) the decision (of the OD) is that the opposition is terminated or that the opposition is terminated without a decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1569/19 - From novelty to inventive step, late

Key points

• " The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent", in addition to inventive step attacks starting from other documents. 
• " In appeal, [the opponent] presented a new [inventive step] objection based on the fact that D6 did not disclose feature [1.3](c)."
• " The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12)." 
•  " This [that D6 did not disclose feature [1.3](c)] is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6." 
• The fact/argument distinction is a rather subtle one. The distinction is, however, important because new arguments that do not involve new facts might not be covered by Art. 114(2) EPC. The decision treats the admissibility under Art. 12(4) RPBA 2007, and "the board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments." 
• "Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings." 
• As a comment, the appeal decision also notes that: "the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). 
• As a comment, it is unclear to me how this - D6 does not disclose feature 1.3.c - could be a new fact presented for the first time in appeal, given the remark in the minutes that "the opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). "
• The impugned decision and the minutes are a part of the basis of the appeal under Art.12(1)(a) RPBA 2020.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1103/21 - 15 minutes oral proceedings

Key points

•  The proprietor files amended claims in appeal.
• The proprietor had filed no reply at all in the first instance proceedings and the patent was revoked without oral proceedings and without preliminary opinion of the OD.
• The proprietor does not invoke a substantial procedural violation, so probably they had received the notification of the notice of opposition.
• The Board: " Throughout the appeal proceedings, the appellant has not indicated any specific circumstances of the appeal case that could justify the admittance of the new requests into the appeal proceedings within the meaning of Article 12(6) RPBA. In its communication pursuant to Article 15(1) RPBA, the board had already announced the expected non-admittance of the main request and the auxiliary request (see paragraph III above and the respective communication of the board under point 11). However, the appellant did not provide any justification either in writing or at the oral proceedings."
• Hence, the appeal is admissible, but all requests are inadmissible.
• 
  
• The oral proceedings before the Board lasted 15 minutes and were held by vico. Both parties attended.
• The possibility of holding short oral proceedings seems a great advantage of vico. In this way, it is unambiguously clear that the proprietor was aware of the appeal and had nothing to add and the right to oral proceedings was complied with in the most efficient manner.*
• (* - without prejudice to the possible right to in-person oral proceedings outside pandemics). 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0433/21 - (I) Retraction withdrawal appeal

Key points

• The Examining Division refused the application. The applicant appeals.
• After a " rather negative" communication of the Board: " In a submission dated 29 December 2022, the then appellant wrote the following: "In the name and on behalf of the applicant, Phoslock Pty Ltd., our appeal filed on February 9, 2021 against the decision of the examining division of December 1, 2022 is hereby withdrawn"" 
• Oral proceedings were cancelled, and fees were refunded.
• " With a submission dated 20 January 2023, the appellant who henceforth is referred to as "the petitioner" made the following requests: "1. Es wird beantragt, den im Schreiben vom 29. Dezember 2022, eingereichten Antrag auf Basis der Regel 139 EPÜ oder aufgrund allgemeiner Rechtsgrundsätze nach Art 125 EPÜ, dahingehend zu korrigieren, dass dieser als Antrag auf eine Teilanmeldung verstanden wird, wie er mit Aktenzeichen 23152685.6 am heutigen Tage beim EPA eingereicht wurde.
• The petitioner submitted that: "it had always been the intention of the petitioner to file a divisional application rather than to withdraw the appeal".
• The Board: "an error caused by miscommunication between the applicant and the representative or by an incorrect recollection of the applicant's instructions [cannot] be regarded as an error under Rule 139 EPC", hence there is no correctable error if the document filed with the EPO is deemed to express the representative's intention at the time of filing"
• The Board is of the view that it has to decide on the request for retraction of the withdrawal. This procedure, however, does not reopen the appeal as such if the retraction is not accepted. 
• The Board disagrees with T 0695/18 that a correction of a withdrawal of an appeal is never possible. I think the position of the present Board is reasonable. 
• The Board introduces a difference in legal status between a same-day retraction and a later retraction. Same day would be possible because "one day is the smallest temporal unit" in the context of the EPC.
• I am not entirely sure if one day is the smallest temporal unit for written proceedings before the EPO in all contexts, see T1946/21 (though that decision  may be largely obsolete after G1/22)
• "Only a withdrawal made during oral proceedings becomes immediately effective. This is nonetheless based on procedural reasons, and not on substantive ones, since either the oral proceedings are declared closed with the effect of res iudicata, or (in the case of appeal and cross-appeal) a subsequent retraction still during oral proceedings would have to be examined in the same way as a late-filed request. "
• The Technical Board: "The public would be ill-served by well-meant, yet ill-explained exceptions to seemingly strict rules in order to do justice to individual cases. Such case-specific exceptions invariably lead to uncertainty and entice litigation. The above considerations apply all the more since the typical users of the European patent system are professional representatives (mandatory for applicants not resident in [a contracting state of the EPC]) who have passed a qualifying examination and do not need special protection for inexperienced users."
• "In the case at issue, the petitioner declared a withdrawal of the appeal, yet in fact had received instructions to file a divisional application and withdraw the appeal. Although the petitioner first argued that the withdrawal was meant to be the filing of a divisional application, during oral proceedings it was submitted that the declaration to withdraw the appeal was not erroneous, but incomplete, and the error was the omission to (additionally) file a divisional application, as if one page of the document as submitted on 29 December 2022 had gone amiss."
• Note that evidence must be available of the true intent at the relevant time.
• "the Board finds that in the present case the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, but an omission to carry out the client's instructions. The omission of a procedural act cannot in itself be regarded as a correctable error under Rule 139 EPC, because it does not fall within the scope of an error or mistake in a "document filed with the European Patent Office" as required by that Rule, but rather constitutes an error or mistake in the run-up to the filing of the document. This narrow interpretation of the concept of "error" not only conforms to the wording of Rule 139 EPC, but also alleviates the concerns highlighted in decision T 695/18, i.e. that applying Rule 139 EPC to such cases as the current one would compromise legal certainty."
• The Board finds the approach of T 2474/19 to be "particularly helpful": "it is the acting person's error which must be considered, i.e. the error of the person who actually filed the document to be corrected".
• The request for correction/ retraction is refused. The meanwhile filed divisional application is not validly filed, as I understand the Board; the Board does not say this with so many words. Perhaps the status of the divisional will be the subject of an appeal in the case of the divisional application.  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.